The UK Intellectual Property Office (IPO) has recently commenced a public consultation and review of its trade mark services and fees. These proposals follow The European Trade Mark Office (the Office for Harmonisation in the Internal Market or OHIM) recent announcement that the official fees for filing and registering a Community Trade Mark have been cut by around 40% from around €1600 to €1000.
Although many have been quick to label this a price war between the UK and EU trademark offices, the IPO claim the motivation behind the consultation is their growing concern the current economic climate will further decrease trade mark applications (down 18% in 2008) and leave many businesses’ intellectual property at risk.
The consultation sets out 8 proposals aimed to “help businesses register trade marks and patents” and particularly focus on small and medium sized business that find the cost of trademark registration too high.
The consultation suggests a number of different proposals including; a new service, the facility for online filing and fee reductions. The proposals include;
(i) “Early Assist” Application Service
This is a new service that provides an examination report which details the results of the search for potentially conflicting trade marks. This service will be available for new applications who eFile their applications and pay 50% of the application fees. Once they have seen the results of the examination report applicants will have the option to continue with the application and pay the balance or withdraw the application and forfeit the fees they have paid.
(ii) Electronic Filing (eFiling)
The IPO propose to offer a reduction of £30 from the basic £200 application fee when the application is made online. They also propose to discount the fees in patent applications by £10 when made online.
(iii) Adjustment in Fees
As well a discount for eFiling the IPO proposes a decrease the fee to file an opposition against a prospective trade mark from £200 to £100. They also propose an increase in the fee for an extension to the cooling off period, the period in which parties negotiate a settlement, from £50 to £100.
Get what you need
Although it is very tempting to get drawn into the excitement of a price war and try and bag a bargain, it would be prudent to remember that the most important question remains the same: what kind of brand protection does the business need? Just as the prudent watch buyer will be satisfied with a watch that simply tells the time and not be tempted by the offer of a product that is accurate to the millisecond, works at depths of 1000m and will survive nuclear explosion. The prudent business should not be tempted by a European Community Trade Mark (CTM) boasting protection in over 25 countries when a UK trade mark will provide the protection required.
Although a CTM may seem good value many businesses will not need a trade mark for the whole of the EC if the business only operates in the UK and it will therefore be cheaper and quicker just to apply for a UK trade mark.
Additionally, if you will only be using a brand for a short period of time for example for a one-off promotion or event then it may not be economical to apply for a trade mark particularly if your budget is limited. In either case there will be other steps that you can take to protect your brand.
Although the initial cost associated with trade marks has decreased the ongoing cost of managing and policing your brand remains. It is therefore important to ensure you consider all aspects of intellectual property and seek advice where necessary.
There is no point in spending large sums of money to register trade marks or designs unless you are willing to prevent other parties from entering your market with the same or similar brands. The registration of trade marks is just one weapon available to the business seeking to protect their intellectual property rights and will prove most effective when used as part of a coordinated brand protection policy.
Nick Phillips is a partner and Tim Whitney is a trainee in the IP/IT Group of Surrey based law firm, Barlow Robbins LLP